If you listened to the oral argument [mp3 here], you would not be surprised that the CAFC reversed. Appellee Federal faced this uncomfortable question posed by Judge Newman: why did your client choose a mark that is pretty close to a mark that's already out there? Federal answered that it chose the mark because it wanted an association with Milan (although its tires are not made in Milan).

The Board had found that POTENZA and TURANZA "are not strong or famous marks because they are accompanied in advertising by the mark BRIDGESTONE or Bridgestone's 'B' log." However, Bridgestone "cited many commercial examples in which the marks POTENZA and TURANZA are prominently featured while showing Bridgestone as the manufacturer." The court agreed with Appellant that the use of the BRIDGESTONE mark concurrently with POTENZA and TURANZA does not diminish the status of those two marks as strong marks for tires.

The prolonged exclusive use of these marks, the extensive promotion and marketing, the billions of dollars of sales, of tires bearing these marks, shows commercial strength. A unique arbitrary word mark does not lose its strength as a trademark when the manufacturer is identified along with the branded product. Each identification may have trade significance.

Repeating the theme that she raised at oral argument, Judge Newman chastised Applicant for choosing a confusingly similar mark:

There is a heavy burden on the newcomer to avoid consumer confusion as to products and their source. *** This court has cautioned that there is “no excuse for even approaching the well-known trademark of a competitor.” *** This caution applies here; the prior user is entitled to the traditional protections of its marks of trade, as against newcomers choosing a confusingly similar mark for the same goods.

The court concluded that the Board erred in dismissing the opposition, in light of the identity of the goods, the long prior use of the POTENZA and TURANZA marks, their market strength, and the similarities in sound and connotation with MILANZA.

3 Comments:

"Appellee Federal faced this uncomfortable question posed by Judge Newman: why did your client choose a mark that is pretty close to a mark that's already out there? Federal answered that it chose the mark because it wanted an association with Milan (although its tires are not made in Milan)."

How much of this factfinding was in the record on appeal, and how much was it de novo factfinding as late as oral argument?